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Huawei Technologies, Co. Ltd. v. Samsung Electronics Co. Ltd.

United States District Court, N.D. California

April 27, 2017

HUAWEI TECHNOLOGIES, CO, LTD, et al., Plaintiffs,
v.
SAMSUNG ELECTRONICS CO, LTD., et al., Defendants.

          ORDER GRANTING SAMSUNG LEAVE TO AMEND INFRINGEMENT CONTENTIONS RE: DKT. NO. 116

          William H. Orrick United States District Judge

         INTRODUCTION

         Counterclaim-plaintiffs Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Samsung”) seek to amend their infringement contentions to (1) include additional infringing instrumentalities and (2) change the conception dates with respect to Samsung's U.S. Patent Number 8, 228, 827 (“'827 Patent”) and RE44, 105 (“'105 Patent”). Counterclaim-defendants Huawei Technologies Co., Ltd., Huawei Device USA, Inc., Huawei Technologies USA, Inc. and HiSilicon Technologies Co. Ltd. (collectively, “Huawei”) do not oppose the first request, but contend that Samsung's second request should be denied because Samsung has not been diligent and Huawei will be prejudiced if Samsung is permitted to amend the conception dates at this time. Because Samsung has been at least marginally diligent and I do not see prejudice to Huawei, Samsung's motion to amend the conception dates is GRANTED.

         BACKGROUND

         Huawei initiated this action on May 24, 2016; Samsung answered and filed counterclaims on August 22, 2016. See Compl. (Dkt. No. 1); Answer, Third Party Complaint, and Counterclaims (Dkt. No. 42[redacted], Dkt. No. 41-3[under seal]).

         On October 25, 2016, Samsung served its infringement contentions and document productions as dictated by Patent Local Rules 3-1 and 3-2. Lordgooei Decl. ¶ 2 (Dkt. No. 116-1); see Samsung's Disclosure of Asserted Claims and Infringement Contentions (Id., Ex. 1, Dkt. No. 116-2; Huawei's Partial Opp'n to Samsung's Mot. (“Opp'n”), Ex. A, Dkt. No. 120-3).[1] But it did not identify specific conceptions dates for four of Samsung's nine asserted patents, including the '827 and '105 patents. See Samsung's Disclosure at 8. Rather, it disclosed priority dates of “at least” February 9, 2007 for the '827 patent and “at least” April 6, 2005 for the '105 patent. Id.

         On November 7, 2016, Huawei wrote to Samsung to address deficiencies in its contentions, including Samsung's failure to identify specific dates of conception for each asserted patent. 11/7/16 Letter to Samsung (Opp'n, Ex. B, Dkt. No. 120-3). It specifically requested confirmation that Samsung would not rely on any conception dates earlier than the priority dates disclosed. Id. at 1. Samsung did not immediately respond and Huawei sent another letter on November 30, 2016. 11/30/16 Letter to Samsung (Opp'n, Ex. C, Dkt. No. 120-3; Lordgooei Decl., Ex. 2, Dkt. No. 116-3). Samsung responded on December 2, 2016, disputing that it was required to identify specific conception dates (as opposed to priority dates), but providing supplemental infringement contentions that identified additional conception dates “in an effort to resolve potential disputes between the parties[.]” 12/2/16 Letter to Huawei (Opp'n, Ex. D, Dkt. No. 120-3); see Samsung's First Supplemental Disclosure of Asserted Claims and Infringement Contentions (Opp'n, Ex. E, Dkt. No. 120-3; Lordgooei Decl., Ex. 3, Dkt. No. 116-4). It also stated its understanding that “neither party will be required to seek leave to amend their respective infringement contentions” and “reserve[d] the right to update these dates as additional information becomes available.” 12/2/16 Letter to Huawei. Samsung identified “April 6, 2005” as the conception date for the '105 patent and “January 2007” as the conception date for the '827 patent. Samsung's First Supp. Infr. Contentions at 8. Huawei accepted the conception date for the '105 patent, but notified Samsung that it had to identify a specific date, not just a month and year, for the '827 patent. 12/15/16 Letter to Samsung (Opp'n, Ex. F, Dkt. No. 120-3). It also disputed Samsung's contention that it could amend without seeking leave because “Huawei is relying on these dates to develop invalidity contentions[, ]” and “[a]ny changes could negatively impact Huawei's ability to put forth an invalidity defense.” Id.

         Although Samsung continued to disagree that the Patent Local Rules required disclosure of a specific date, it amended its conception date for the '827 patent to “January 26, 2007.” 1/10/17 Letter to Huawei (Opp'n, Ex. G, Dkt. No. 120-3; Lordgooei Decl., Ex. 4, Dkt. No. 116-5). Ten days later on January 20, 2017, the parties exchanged invalidity contentions and accompanying document productions. Huawei contended that Samsung was not entitled to a priority date of February 2007 for the '827 asserted claims, nor a priority date of April 2005 for the '105 asserted claims. Huawei's Invalidity Contentions at 90 (Opp'n, Ex. H, Dkt. No. 120-3; Lodgooei Decl., Ex. 6, Dkt. No. 116-7). For the '827 patent, Huawei disclosed allegedly invalidating prior art that it claims was available as early as December 2005 and as late as January 5, 2010. Id. at 27; see Samsung's Mot. to Amend Infr. Contentions at 3 (“Mot.”)(Dkt. No. 116).[2] And for the '105 patent, Huawei disclosed allegedly invalidating prior art that it claims was available as early as 1999, and as late as June 8, 2009. Huawei's Invalidity Contentions at 32-33; see Mot. at 3. According to Huawei, it relied upon the conception dates provided by Samsung to locate key prior art references. See Opp'n at 4 (citing to Huawei's Invalidity Contentions).

         Between January 12 and February 14, Samsung identified documents supporting a conception date of January 22, 2007 for the '827 patent, and March 30, 2005 for the '105 patent.[3] Lordgooei Decl. ¶ 3. Samsung produced the responsive, non-privileged information on February 14, 2017. Id.

         The next day, Samsung sent Huawei an email with proposed second supplemental infringement contentions attached. 2/15/17 Email to Huawei with Supplemental Infringement Contentions Attachment (Opp'n, Ex. I, Dkt. No. 120-3). The supplemental contentions identified additional infringing products based on Huawei's supplemental interrogatory responses, and proposed changes to two conception dates: from January 26 to January 22, 2007 for the '827 patent, and from April 6 to March 30, 2005 for the '105 patent. Id. Huawei responded that it did not oppose Samsung's revisions to the list of accused products but did oppose the revisions to its claimed conception dates. 2/22/17 Email to Samsung (Opp'n, Ex. J, Dkt. No. 120-3; Lordgooei Decl., Ex. 9, Dkt. No. 116-10). Samsung then requested a meet and confer and, as a compromise, proposed a stipulation to grant Samsung leave to serve disclosures with the revised conception dates and allow Huawei 30 days to respond to identify any additional prior art pre-dating the new conception dates. 2/27/17 Email to Huawei (Lordgooei Decl., Ex. 10, Dkt. No. 116-11).

         After the meet and confer, Huawei requested that Samsung identify the documents supporting its revised conception dates. 3/8/17 Email to Samsung (Opp'n, Ex. K, Dkt. No. 120-3; Lordgooei Decl., Ex. 11, Dkt. No. 116-12). For the '827 patent, Samsung identified a document it had produced on February 14, 2017, and for the '105 patent, Samsung cited a draft privilege log entry. See Opp'n, Ex. L, Dkt. No. 120-3. After reviewing the documents, Huawei maintained its objection to Samsung's motion for leave to amend its conception dates. On March 13, 2017, Samsung filed its motion. Dkt. No. 116.

         LEGAL STANDARD

         Pursuant to the Patent Local Rules for the Northern District of California, a party claiming infringement must submit infringement contentions within fourteen days of the parties' initial Case Management Conference. Patent L.R. 3-1. These must include, among other things, “each accused apparatus, product, device, process, method, act, or other instrumentality (‘Accused Instrumentality') of each opposing party of which the party is aware, ” and must “be as specific as possible.” Patent L.R. 3-1(b). Rule 3-1(f) requires parties to provide, “[f]or any patent that claims priority to an earlier application, the priority date to which each asserted claim allegedly is entitled.”

         Patent Local Rule 3-2 governs “Document Production Accompanying Disclosure, ” which must accompany the Rule 3-1 disclosures. This must contain documents that relate to the sale or other use of the claimed invention, as well as “[a]ll documents evidencing the conception, reduction to practice, design, and development of each claimed invention, which were created on or before the date of application for the patent in suit or the priority date identified pursuant to Patent L.R. 3-1(f), whichever is earlier.” Patent L.R. 3-2(a)-(b). A defendant must serve invalidity contentions and document production no later than 45 days after it is served with the infringement contentions. Patent L.R. 3-3, 3-4.

         The court may allow a party to amend its infringement contentions only “upon a timely showing of good cause.” Patent L.R. 3-6. The Patent Local Rules supply several circumstances that support a finding of good cause, provided there is no prejudice to the non-moving party. Id. These include “[a] claim construction by the Court different from that proposed by the party seeking amendment, ” and “[r]ecent discovery of nonpublic information about the Accused Instrumentality which was not discovered, despite diligent efforts, before the service of the Infringement Contentions.” Id.

         The patent local rules were designed to require parties to crystallize their theories of infringement early in litigation, and to adhere to such theories. Apple Inc. v. Samsung Elecs. Co., No. 12-CV-0630-LHK PSG, 2013 WL 3246094, at *1 (N.D. Cal. June 26, 2013). In determining whether a party has good cause to amend, courts will first look to see whether the moving party has good cause, which requires that it act with diligence, and then to whether the non-moving party will suffer prejudice. Id. The focus of this inquiry is on the moving party's reasons for seeking amendment. Id. The moving party bears the ...


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